USPTO Patents Application 09870801

Filed by: Jameson Lee
Administrative Patent Judge
Mail Stop Interference
P.O. Box 1450
Alexandria VA 22313-1450
Tel: 703-308-9797
Fax:703-305-0942

UNITED STATES PATENT AND TRADEMARK OFFICE

Paper 1

Filed
18 December 2003

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES

KARL L. GINTER, VICTOR H. SHEAR,
FRANCES J*. SPAHN and DAVID M. VAN WEE,
Junior Party,

(Patents 5,920,861; 5,982,891; 6,138,119 and 6,253,1 SBfc-

GREG BENSON, GREGORY H. URICH
and CHRISTOPHER L. KNAUFT,
Senior Party,
(Applications 09/164.606 and 09/321,386).

MAILED

DEC 1 8 2003

PAT. & T:M. OFFICE
BOARD OF PATENT APPEALS
AND INTERFERENCES

Patent Interference No. 105,193

NOTICE DECLARING INTERFERENCE
(37CFR § 1.611)

Part A. Declaration of interference

An interference is declared (35 U.S.C. § 135(a)) between the above-identified parties.
Details of the application(s), patent (if any), reissue application (if any), count(s) and claims
designated as corresponding or as not corresponding to the count(s) appear in Parts E and F of
this NOTICE DECLARING INTERFERENCE.

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PartB. Judge designated to handle the interference

Administrative Patent Judge Jameson Lee has been designated to handle the interference.
37 CFR§ 1.610(a).

Part C Standing order

A Trial Section STANDING ORDER accompanies this NOTICE DECLARING
INTERFERENCE. The STANDING ORDER applies to this interference.
Part D. Conference call to set dates

A telephone conference call to discuss whether the priority phase of this interference can
or should be conducted first is scheduled for 1 :30 p.m. on 7 January 2004 (the call will be
initiated from the PTO).

If the priority phase of this interference is not conducted first, the Administrative Patent
Judge intends to set the times for filing preliminary motions on January 7, 2004 and set Time
Period 8 as October 7, 2004.

A copy of a "sample" order setting times for taking action during the preliminary motion
phase of the interference accompanies this NOTICE DECLARING INTERFERENCE. Counsel
are encouraged to discuss the order prior to the conference call with the view to coming to some
agreement as to dates for taking action. A typical preliminary motion period lasts approximately
nine (9) months. Counsel should be prepared to justify any request for a shorter or longer period.

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Part E. The parties involved in this interference are:

Named Inventor:

Patent:

Title:

Assignee:
Accorded Benefit:
Attorneys:
Address:

Junior Party

KARL L. GINTER, Beltsville, MD
VICTOR H. SHEAR, Bethesda, MD
FRANCIS J. SPAHN, El Cenito, CA
DAVID M. VAN WIE, Sunnyvale, CA

5,920,861, granted 6 July 1999, based on
application 08/805,804, filed 25 February 1997

Techniques for defining using and manipulating
rights management data structures

InterTrust Technologies Corp.

None

See last page

See last page

Patent-
Title:

Assignee:
Accorded Benefit:
Attorneys:
Address:

5,982,891, granted 9 November 1999, based on
application 08/964,333, filed 4 November 1997

Systems and methods for secure transaction
management and electronic rights protection

InterTrust Technologies Corp.

Application 08/388,107, filed 13 February 1995

See last page

See last page

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Patent:

6,138,1 19, granted 24 October 2000, based on
application 09/300,778, filed 27 April 1999

Titfe: Techniques for defining, using and manipulating

rights management data structures

Assignee: InterTrust Technologies Corp.

Accorded Benefit: 5,920,861 , granted 6 July 1 999, based on

application 08/805,804, 25 February 1997

Attorneys: See last page

Address: See last page

Patent: 6,253, 1 93, granted 26 June 2001 , based on

Application 09/208,01 7, filed 9 December 1 998

Title: Systems and methods for. the secure transaction

management and electronic rights protection

Assignee: InterTrust Technologies Corp.

Accorded Benefit: 5,982,891 , granted 9 November 1 999, based on

application 08/964,333, filed 4 November 1997;
Application 08/388,107, filed 13 February 1995

Attorneys: See last page

Address: See last page

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Senior Party

Named inventor:

Application:
Title:

Assignee:
Accorded Benefit:

Attorneys:
Address:

GREG BENSON, Dalby, Sweden
GREGORY H. URICH, Lund, Sweden
CHRISTOPHER L. KNAUFT, San Diego, CA

09/164,606, filed 1 October 1998

Method and system for managing a data object
so as to comply with predetermined conditions
for usage

Macrovision Corporation

Patent 5,845,281 ; granted 1 December 1998, based
on application 08/594,81 1, filed 31 January 1996;
Swedish Application 9500355-4, filed 1 February 1995

See last page
See last page

Application:
Title:

09/321,386, filed 27 May 1999

Method and system for managing a data object
so as to comply with predetermined conditions
for usage

Assignee:

Macrovision Corporation

Accorded Benefit: Patent 5,845,281, granted 1 December 1998, based

on application 08/594,81 1, filed 31 January 1996;
Application 09/164,606, filed 1 October 1998;
Swedish Application 9500355-4, filed 1 February 1995

Attorneys: See last page

Address:

See last page

Part F. Count and claims of the parties

Count 1

Claim 48 of Benson's Application 09/321,386 (Benson ffJ)

The claims of the parties corresponding to Count 1 are:

Ginter's Patent No. 5,920,861 (Ginter I): Claims 1-4, 1 1-13, 34-38, 40-43, 56, 63, .

64,67 and 68

Ginter's Patent No. 5,982,891 (Ginter H): Claims 26-31

Ginter's Patent No. 6,138,1 19 (Ginter ID): Claims 1-28, 30-32, 34-42, 51, 53-57 and 59-63
Ginter's Patent No. 6,253,193 (Ginter rV): Claims 1-18 and 64-72
Benson's Application 09/164,606 (Benson II): Claims 30-32, 34-41, 44-46, 48, 51, 56, 58-66,

68 and 69

Benson's Application 09/321,386 (Benson ID): Claims 1-3, 5-12, 15-17, 19, 22, 27, 29-37 and

39-53

The claims of the parties not corresponding

Ginter's Patent No. 5,920,861 (Ginter I):

Ginter's Patent No. 5,982,891 (Ginter II):
Ginter's Patent No. 6,138,1 19 (Ginter HI):
Ginter's Patent No. 6,253,193 (Ginter IV):
Benson's Application 09/164,606 (Benson E
Benson's Application 09/321, 386 (Benson 1

Count 1 are:

Claims 5-10, 14-33, 39, 44-55, 59-62, 65, 66,

69 and 70
Claims 1-25 and 32-102
Claims 29, 33, 43-50, 52, 58 and 64
Claims 19-63

Claims 33, 42, 43, 47, 49, 50, 52-55, 57 and 67
: Claims 4, 13, 14, 18, 20, 21, 23-26, 28 and 38

Part G. Heading to be used on papers

The following heading shall be used on papers filed in the interference. See STANDING
ORDER U 3.5.

Paper

Filed on behalf of [name of party]
By: Name of lead counsel

Name of backup counsel

Street address

City, State, and Zip-Code

Tel:

Fax:

UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
(Administrative Patent Judge Jameson Lee)

KARL L. GINTER, VICTOR H. SHEAR,
FRANCES J. SPAHN and DAVID M. VAN WIE,
Junior Party,

(Patents 5,920,861; 5,982,891; 6,138,119 and 6,253,193),

GREG BENSON, GREGORY H. URJCH
and CHRISTOPHER L. KNAUFT,
Senior Party,
(Applications 09/164,606 and 09/321,386).

Patent Interference No. 105,193

TITLE OF PAPER

Leave a blank line because the board assigns the paper numbei.

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PartH. Summary of dates for taking action

Times for taking action are set out in the following sections of the STANDING ORDER:

f 4: date for identifying lead and backup' counsel.

f 5: date for identifying any real party in interest.

f 6: date for requesting copies of involved and benefit applications and
patents.

% 7: date for accomplishing certain discovery.
^ 8: date for filing clean copy of claims.

if 9: date for filing clean copy of claims in cases with drawings or claims
containing a means plus function limitation.

% 1 0: date for filing list of proposed preliminary motions.

If 13.10.2: dates for filing oppositions to Rule 635 miscellaneous motions and
dates for filing replies to oppositions.

If 14.1 .1 : date for objecting to admissibility of evidence.

% 14.2: date for serving supplemental affidavits or evidence to respond to
objection to admissibility of evidence.

f 14.3: dates when cross-examination can take place.

if 15.2: dates for taking action with respect to settlement discussions.

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Part I. Order form for requesting file copies

FILE COPY REQUEST
Interference 105,193

A copy of Part E of this NOTICE DECLARING INTERFERENCE should be attached to
this FILE COPY REQUEST, with a circle by hand around the patents and applications for which
a copy of a file wrapper is desired.

To facilitate processing of this FILE COPY REQUEST, the following information should
be included:

1 . Charge fees to USPTO Deposit Account No. ' •

2. Complete address, including street, city, state, ZIP code and telephone number (do
not list a Post Office box because file copies are sent via commercial overnight
courier).

Telephone, including area code:

Part J. Signature of administrative patent judge

Date: /V / V'*^

/Administrative Patent Judge

-^-j ^\ ^ js ^ ^ >

J^VTESONLEE

Enc:

Copy of STANDING ORDER

Copy of order used for setting times for taking action in the preliminary motion
phase of the interference .

Copy of order used for setting times for taking action in the testimony and brief
phases of the interference

Revised May 2003

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cc (via Federal Express):

Attorney for GINTER:

Linda J. Thayer, Esq.

FINNEGAN, HENDERSON, FARABOW,

GARRETT & DUNNER, LLP
700 Hansen Way
Palo Alto, CA 94304

Attorney for BENSON:

Charles L. Gholz, Esq.

OBLON, SPIVAK, McCLELLAND,

MAJER & NEUSTADT, P.C.

1940 Duke Street

Alexandria, VA 22314